University College Dublin

International Protection of Patents

Seminar Paper

by

Thomas Schmidt

Preface

“Columbus was not the first who discovered America,
but he patented it as the first.”

(Andrzej Majewsk)

The modern liberal state hesitates to grant monopolies to its citizens. If such privileges are granted nowadays, there has to be a strong justification for thus breaching the principal of equal treatment. All Intellectual Property rights, whether registered like Industrial Designs, Trade marks or not registered as Copyrights or Companies’ Goodwill (Passing off), create monopolies, since the right holder may prevent others from using his thought, the idea or invention.

Since intellectual property is insubstantial and therefore not visible, on the other hand, these rights must be protected by the state in a different way than the rights of property or possession of tangible assets. It is easy and cheap to reproduce intellectual property and – prima facie - beneficial into the bargain. To develop intellectual property by one self is time-consuming and cost-intensive. But people stop doing so immediately if the result of their work is not protected against copying, as there is no incentive to create new intellectual property.

‘Counterfeiting and piracy, and infringements of intellectual property in general, are a constantly growing phenomenon which nowadays has an international dimension, since they are a serious threat to national economies and governments.’¹

In an international context, this phenomenon takes particular advantage of the national disparities in the means of granting and enforcing intellectual property rights. The degree of protection of intellectual property has therefore direct repercussions on trade and a direct impact on the conditions governing competition in the ‘Global Village’. This situation leads to diversions of trade, distorts competition and creates disturbances on the market. That leads to a loss in confidence in economic circles in the market, and hence to a reduction in investment – and results in hurtful economic and social consequences. The increasing use of the Internet in the Information Society, the immediate access to information and the provision of more and more information in electronic form facilitates infringement of all kinds of intellectual property.

Research and development, manufacture and trade of technical products and articles have become ‘global’ in an extend that mankind has never went through and will grow to an extend that is not foreseeable at the present time. The more the interlocking of international markets increases, the more protection of intangible rights is needed on an international level. This work is an outline of the recent status of protecting patent rights in an international context. The essay is principally divided into two main parts: (a) Application for and grant of a patent on an international level (Chapters 1 to 5) and (b) cross-border enforcement of patent rights (Chapter 6). For introductory purposes in Appendix I an overview over the basic principles and backgrounds of patent law can be found, which is not part of the work. Appendices II and III provide international sample patent applications.

Once again my special thanks go to Herbert Vogler, former staff of the patent department of Akzo Nobel B.V. / Akzo Nobel Faser AG, for his continuing support, in particular through contributing his views and judgement as a practitioner in questions of patent law in reality and assessing recent developments.

I have endeavoured to state the law and recent information like press releases or negotiations on treaties at April 15, 2003. Dublin in April 2003

Thomas Schmidt

Contents III
Preface I
Contents III
Bibliography IV
Table of cases VII

CHAPTER 1: International Patents 1
1. Introduction 1
2 Application for Patent in multiple countries 1
3 International Legal Protection 3
4 International Patent Treaties 3

CHAPTER 2: Paris Convention 5
1 Introduction 5
2 Subject Matter 5
3 Impact 62
4 Pitfalls 7

CHAPTER 3: Patent Convention Treaty 8
1 Introduction 8
2 Procedure 8
3 Impact 11
4 Pitfalls 12

CHAPTER 4: European Patent Convention 13
1 Introduction 13
2 Procedure 13
3 Impact 15
4 Pitfalls 17

CHAPTER 5: Recent developments 19
1 Introduction 19
2 TRIPS 19
3 (Substantive) Patent Law Treaty 21
4 EAPO, ARIPO & OAPI 22
5 EC Community Patent 23

CHAPTER 6: Cross-border enforcement 25
1 Cross-border patent enforcement strategies 25
2 Cross-border patent infringement defences 30
3 Selecting the governing law 35
4 Recent developments 36

CHAPTER 7: Conclusions 38

APPENDIX I: Basic principles AI
1 Introduction AI
2 The origin of patents AI
3 Patentability AIII
4 Procedure AV
5 Scope of monopoly AIX
6 Property rights and exploitation AX
7 Revocation AXI

APPENDIX II: Sample PCT Application AXII
APPENDIX III : Sample EPC Application AXIII

Bibliography
[in Downloaddatei enthalten]

Table of Cases
[in Downloaddatei enthalten]

1 Introduction

The Ideal of a “World Patent”
As introduction, however, an example may show the importance of an international protection of patents in a globalised world: The ‘Inventos Ltd’ invented (and manufactures) the original ‘Swiss Army Bagel’. Inventos is a local small size business in Co. Kilkenny, but it patented the ‘Swiss Army Bagel’ at the Irish Patent Office under the Patent No. 9,624,888. At present, the ‘Swiss Army Bagel’ is just known (and distributed) in the region of Kilkenny.

Inventos plans to expand its business to Western Europe and North America. The directors of Inventos ask their company’s solicitor Roger Ryan how Inventos could protect the ‘Swiss Army Bagel’ against infringement in Canada, France, USA, Spain and Switzerland. The directors of Inventos are also interested in necessary steps to proceed to preserve once gained protection and indications for hazards and pitfalls.

2 Application for a Patent in Multiple Countries

i) National Privileges granted by National Standards

There are – generally spoken – three requirements (as shown in Appendix I.4) that a patent application has to fulfil upon a patent is granted. (1) The idea has to be novel; (2) it has to be an Inventive Step; and (3) it has to be Industrial Applicable.

Inventos already fulfilled these requirements at the Irish Patent Office. But when an applicant seeks to expand the patent grant to other countries, like Canada, France, USA, Spain and Switzerland, the applicant has to apply in every of these countries for the grant of the patent, and actually has to fulfil these three general requirements in each country and has to await the examination process of each national authority. Of course, the procedure – especially the novelty search and examination — at every national patent office charges application fees.

On the other hand is the risk that the application does not comply with the local interpretation of the requirements of patentability. Although the Patent Acts of most countries are structured rather comparably, the interpretation of what is novel or industrial applicable follows merely national criteria.¹ Another difficulty is that once an invention is published anywhere in the world it is not “new” anymore. Part of the national patent application is a publication of the invention (see Appendix I.4.II). Furthermore, competitors could file their coincidental creation in other countries earlier – “first come, first served”.

ii) “World Patent“
For decades experts involved in patents dream of a “World Patent”, that means a single application, a single novelty search and a single examination leads to one patent that protects the invention worldwide against infringement at one single standard. A “World Patent” would facilitate registration as well as protection and defence of patented inventions.

iii) General Rule: Patent law is affair of domestic law and jurisdiction
At present, the international development is many steps before this ideal. The governing principle of International Private Law is e.g. expressed by Article 16(4) of the Brussels Convention on Jurisdiction and Enforcement:

‘Issues related to the registration of a right are exclusively the domain of the country in which that registration took place.’

It is a principle of International Private Law the Protection that a patent right is exclusively affair of domestic (national) law and this principle assures the national courts an exclusive jurisdiction on intellectual property matters.²

The ‘Convention on Jurisdiction and the Enforcement of Judgements in Civil and Commercial Matters’ (Brussels Convention) of 1968, to which all members of the EU are signatories and the ‘Convention on Jurisdiction and the Enforcement of Judgements in Civil and Commercial Matters’ (Lugano Convention) of 1988, which effectively extends the provisions of the Brussels Convention to European Free Trade Association (EFTA) countries regulate - inter alias - the relation of national intellectual property rights and their exploitation and enforcement on a European level. Since March 2002, the ‘Regulation 44/2001 on Jurisdiction and Enforcement’ (the Brussels I Regulation) largely replaced the Brussels Convention within the European Union. These conventions/regulation do neither deviate from International Private law in this respect.

[....]

1  EC commission, Proposal for a ‘Directive of the European Parliament and of the Council on measures and procedures to ensure the enforcement of intellectual property rights’, 3, 30 January 2002, http://www.europa.eu.int/comm/internal_market/en/intprop/news/index.htm

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1  e.g. Improver Corp v Remington Consumer Products Ltd, 1990 FSR 181; where a British and a German court differed on the issue of infringement when applying the same principles under the European Patent Convention; even though both courts were applying the convention correctly.

2  Pertegás Sender, Cross-Border Enforcement of Patent Rights (2002), 2.01